Bruno Lichtenegger et al.

Patent Trials and Appeals Board

Jul 30, 2019

13316672 - (D) (P.T.A.B. Jul. 30, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/316,672 12/12/2011 Bruno LICHTENEGGER W1154/20036 5119
3000 7590 07/30/2019
CAESAR RIVISE, PC
7 Penn Center, 12th Floor
1635 Market Street
Philadelphia, PA 19103-2212
EXAMINER
DEXTER, CLARK F
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
07/30/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@crbcp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRUNO LICHTENEGGER and MATTHAEUS SCHANTZ
____________

Appeal 2018-007521
Application 13/316,672
Technology Center 3700
_______________

Before JAMES P. CALVE, GEORGE R. HOSKINS, and LISA M. GUIJT,
Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–4, 6, 7, and 14 under 35 U.S.C. § 103(a) as
unpatentable over Rajala (US 5,806,401; issued Sept. 15, 1998), Wiand (US

1 Wacker Chemie AG is identified as the real party in interest. Br. 2.
Appeal 2018-007521
Application 13/316,672

2
5,802,939; issued Sept. 8, 1998), and Andersen (EP 0 294 997; published
Dec. 14, 1988).2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claims 1, 3, and 14 are the independent claims on appeal. Claim 1,
reproduced below, is exemplary of the subject matter on appeal.
1. A method for producing thin silicon rods, comprising the
following steps:
a) providing a rod of silicon;
b) sequentially cutting slabs having a particular thickness
from the rod by way of a sawing device, wherein the rod
is respectively rotated axially through 90º or 180º between
two successive cuts so that of four successive cuts two of
the four cuts respectively take place pairwise on radially
opposite sides of the rod; and
c) sawing the cut slabs into thin rods having a rectangular
cross section.

ANALYSIS
Appellants argue claims 1–4, 6, 7, and 14 as a group. Br. 4–7. We
select independent claim 1 as representative, and claims 2–4, 6, 7, and 14
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Regarding independent claim 1, the Examiner finds that Rajala
discloses sequentially cutting slabs having a particular thickness from a rod
(i.e., sawbolt 36) by way of a sawing device (i.e., edging saw blades 96A,

2 Appeal is taken from the Non-Final Office Action dated May 19, 2017.
The Examiner’s objection to the drawings, which is a petitionable, not
appealable matter, has been withdrawn. Adv. Act. 2 (dated July 18, 2018);
Non-Final Act. 2.
Appeal 2018-007521
Application 13/316,672

3
96B, 97A, 97B), wherein the rod is respectively rotated axially through 90º
or 180º, and sawing (e.g., bandsaws 60A, 60B) the cut slabs into thin rods
having a rectangular cross section. Non-Final Act. 3–4.
The Examiner determines that Rajala does not disclose that the rod is
made of silicon and relies on Wiand for teaching that “saws, [and]
particularly band saws[,] . . . are available to cut a wide variety of different
materials, such as glass, wood, ceramic, metals, plastics, stone, silicon
wafers, etc., for many different applications.” Non-Final Act. 6 (citing
Wiand 1:12–15). The Examiner reasons that it would have been obvious
“when looking for a way to efficiently cut a log of silicon into board-like
rods, to reference similar log cutting operations such as that taught by
Rajala.” Id.
The Examiner also determines that it would have been an obvious
matter of design choice “to simply switch the orientation of the saws of
Rajala such that the circular saws are oriented vertically and the bandsaws
are oriented horizontally, particularly since it is an equivalent cutting
configuration.” Non-Final Act. 6. The Examiner further relies on Official
Notice for determining that “it is old and well known in the art to rotate a
workpiece between respective cuts to provide a desired product cut from a
workpiece.” Id. at 6–7 (citing Andersen, Fig. 1).
Appellants argue that Rajala fails to disclose rotating the rod axially
through 90º or 180º between two successive cuts so that, of four successive
cuts, two of the four cuts respectively take place pairwise on radially
opposite sides of the rod. Br. 5
Notably, Rajala discloses that
Appeal 2018-007521
Application 13/316,672

4
[a]fter the saw bolt to be cut is in place, . . . the first cut [is] made
by bandsaws 60A and 60B, . . . that is, two vertical cuts are made
resulting in two parallel planar faces on the saw bolt where all
the bark and some wood along the cut line is removed. A second
cut is then made by bandsaws 60A and 60B parallel to these
planar faces. . . . . The center support 38A . . . drops away from
the saw bolt and the saw bolt is rotated 90º (¼ turn).
The center support 38A . . . is then re-attached to or
re-butted against the saw bolt. The first and second cuts are then
repeated on the reoriented saw bolt thereby resulting in a
substantially square timber.
Rajala 8:55–9:2. However, Rajala’s four cuts are not successive, but rather,
two cuts are performed simultaneously and then the saw bolt is rotated.
Notwithstanding, as set forth supra, the Examiner relies on Official Notice
for disclosing the successive cuts and rotation, as claimed, and therefore, we
are not persuaded of Examiner error by Appellants’ argument. See Ans. 6
(noting that the rejection is based on a combination of references, not on
Rajala alone).
Appellants also argue that
wood and polycrystalline silicon are completely different
materials and the requirements to saw these materials are
completely different. The flexibility (or brittleness) of the
materials is completely different. For example, the breaking
behavior is very different in that, for example, slight tensions
during the processing process of silicon leads to immediate
breakage of the Silicon. Such problems do not at all occur with
wood.
Br. 5; see also id. at 5–6 (arguing that “the handling of wood and silicon
must by completely different”). Appellants further submit that
[i]t is far-fetched to compare a do-it-yourself store type of table
saw with a high-purity polysilicon application. In addition, . . .
Wiand mentions the sawing capability of ‘…silicon wafer…’
Appeal 2018-007521
Application 13/316,672

5
made of monocrystalline silicon. Monocrystalline silicon has no
thermal stress and is significantly easier to process than
polycrystalline silicon. So even a combination of these two
references does not address the sawing of polycrystalline silicon.
Id. at 6.
As correctly determined by the Examiner, claim 1 does not recite
polycrystalline silicon, but recites the step of “providing a rod of silicon.”
See Ans. 7. Notably, none of the other claims on appeal are limited to
cutting polycrystalline silicon. Rajala’s sawmill uses bandsaws to cut wood.
Rajala 7:6. Appellants’ argument does not address Wiand’s teaching that
band saws are appropriate for cutting wood and silicon wafers. See Wiand
1:12–15. Further, claim 1 recites “a sawing device,” and Appellants’ own
Specification discloses “[a] first unit for parallel cutting of a plurality of
vertical indentations, which extend in the longitudinal direction of the rod”
(Spec. 12:7–9) using “shaft 31 having axially offset saw blades 41” (id. at
13:32–33), and “a third unit for carrying out a horizontal longitudinal cut of
the rod” (id. at 12:12–14), wherein “[t]he third unit is in this case
configured, for example, as a conventional band saw 95” (id. at 17:8–9)
(emphasis added). In sum, Appellants’ argument fails to address the
combined teachings of Rajala and Wiand, which suggest to one skilled in the
art of silicon wafer manufacturing that silicon rods may be cut, as claimed,
using a sawing device, as claimed, such as a conventional band saw.
Finally, Appellants argue that Rajala is not analogous art, and
therefore, improperly relied on by the Examiner. Br. 6–7. First, Appellants
submit that Rajala is not in the field of endeavor of Appellants’ claimed
invention, namely, “producing thin silicon rods.” Id. at 6. Second,
Appellants submit that Rajala is not reasonably pertinent to a particular
Appeal 2018-007521
Application 13/316,672

6
problem addressed by the inventors, namely, “dealing with thermal
stresses.” Id. at 7 (citing Spec. 3:15–4:32).
The Examiner responds that a problem addressed by Appellants is
“‘how to efficiently saw a log-shaped workpiece into board-shaped
products,’” and the Examiner reasons that “one of ordinary skill in the art
would clearly understand that at least one solution for this problem resides in
the sawing arts.” Ans. 11.
Appellants apply the correct test for determining whether a reference
is analogous art. The test requires a showing “that a reference is either in the
field of the applicant’s endeavor or is reasonably pertinent to the problem
with which the inventor was concerned in order to rely on that reference as a
basis for rejection.” In re Kahn, 441 F.3d 977, 986–87 (Fed. Cir. 2006)
(citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). The “field of
endeavor” prong asks if the structure and function of the prior art is such that
it would be considered by a person of ordinary skill in the art because of the
similarity to the structure and function of the claimed invention as disclosed
in the application. In re Bigio, 381 F.3d 1320, 1325–27 (Fed. Cir. 2004).
“A reference is reasonably pertinent if, even though it may be in a different
field from that of the inventor’s endeavor, it is one which, because of the
matter with which it deals, logically would have commended itself to an
inventor’s attention in considering his problem.” In re Clay, 966 F.2d 656,
659 (Fed. Cir. 1992).
Appellants’ field of endeavor is the production of silicon rods. See
Spec. 4–5. We agree with Appellants that the field of endeavor of Rajala is
a lumber sawmill, which is different from Appellants’ field of endeavor.
Appeal 2018-007521
Application 13/316,672

7
Rajala, however, addresses the problem of “quick and efficient
movement in the positioning of the saw bolts being milled relative to a
sawmill,” by providing “a rotatable connection between the sawmill 10 and
the bolts being milled,” which “allows the saw bolts being milled to be
rotated, to any given degree, with very little effort and this improves the
quality of the final product lumber.” Rajala 16:60–66. We determine that
because of this subject matter with which Rajala deals (i.e., rotatability of a
sawed workpiece to improve quality), Rajala logically would have
commended itself to Appellants’ attention in considering how to produce
silicon rods mechanically, for example, by using a conventional band saw to
make successive cuts. Moreover, as discussed supra, Wiand is evidence that
a sawing device for wood would have logically commended itself to an
inventor’s attention in considering sawing a silicon wafer. See Wiand 1:12–
15 (“Table top band saws are available to cut a wide variety of different
materials, such as glass, wood, ceramic, metals, plastics, stone, silicon
wafers, etc., for many different applications.”). Thus, Rajala is analogous art
properly relied on by the Examiner.
Accordingly, we sustain the Examiner’s rejection of claim 1, and
claims 2–4, 6, 7, and 14 fall therewith.
DECISION
The Examiner’s decision rejecting claims 1–4, 6, 7, and 14 is
AFFIRMED.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED